Trade Marks - Argos Ltd v Argos Systems Inc.

Jane Lambert

Court of Appeal (Lord Kitchin, Lord Justice Floyd and Sir Colin Rimer) Argos Ltd. v Argos Systems Inc.[2018] EWCA Civ 2211 (9 Oct 208)

"Can a US corporation selling construction software only in the Americas under the name ARGOS be sued for infringement of a registered trade mark by a UK based consumer goods retailer who trades mainly in the UK and Ireland under the same name?" asked Lord Justice Floyd at paragraph [1] of the Court of Appeal's judgment in Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211 (09 October 2018).  His lordship added: "That the question even arises for serious consideration is a consequence of the developments in the European law of trade marks and of the revolution in commerce and advertising brought about by the internet."

The Parties
The "UK based consumer goods retailer" was Argos Ltd. which was referred to in the litigation by the initials "AUL".  That company was the claimant and appellant in these…

"Now we are Six" - The Small Claims Track's Sixth Anniversary

Jane Lambert

Just over 6 years ago the Patents County Court Small Claims Track was launched (see my article Soon there will be a Remedy if Someone steals your Idea19 Sept 2012 NIPC Inventors Club). I was very enthusiastic about the new court and wrote a lot about it as you can see from the bibliography in Small IP Claims31 Jan 2017 NIPC News). 

The reason for my enthusiasm was that it seemed to make IP litigation affordable for thousands of start-ups and other small businesses that felt that the law provided no effective protection for their investments in branding,design,technology and creativity because enforcement of their rights was too expensive and too uncertain.  Before the Civil Procedure Rules came into force in 1999 claims often began with an application for interim injunctive relief.  Most settled when an interim injunction was either granted or refused (if not before) . If the unsuccessful party paid anything at all to the successful party by way of damages or costs the a…

Bayer Plc v NHS Darlington CCG and OthersB

Jane Lambert

Administrative Court (Mrs Justice Whipple)  Bayer Plc v NHS Darlington CCG and others [2018] EWHC 2465 (Admin) 21 Sept 2018

This case was an application by Bayer Plc and Novartis Pharmaceuticals UK Ltd. for judicial review of a decision by 12 clinical commissioning groups  ("CCGs")in Northeast England to offer patients with wet AMD  (age-related macular degeneration) injections of a drug known as Avastin or bevacizumab. The reason for their decision is that Avastin costs £28 per injection compared to £816 for Bayer's EYLEA and £551 for Novartis's Lucentis.  The CCGs had made their decision to save money.  The only problem was that Avastin had been developed for the treatment of cancer and not ophthalmology whereas the other two drugs had been authorized  by the European Medicines Agency for treating wet AMD.

The Challenge
Avastin inhibits a protein known as vascular endothelial growth factor ("VGEF") that stimulates the growth of blood vessels …

Transfer to IPEC - Massimo Osti SRL v Global Design and Innovation Ltd

Jane Lambert

Chancery Division (Master Clark) Massimo Osti SRL v Global Design and Innovation Ltd and another [2018] EWHC 2263 (Ch) (30 Aug 2018)

This was an application  by the claimant to set aside an order made by the court on its own initiative under CPR 3.3 to transfer a claim for an EU wide injunction, unpaid royalties and other relief for EU trade mark infringement and breach of contract and the defendants' counterclaim for a declaration that the mark is invalid from the Chancery Division to the Intellectual Property Enterprise Court ("IPEC").

The Significance of the Application
The Chancery Division is one of three Divisions of the High Court of Justice established by s.5 (1) of the Senior Courts Act 1981.  S.61 (1) and para 1 (i) of Sched. 1 of that Act assign patents, trade marks, registered designs, copyright and design right cases to the Chancery Division.  The Chancery Division has a number of specialist courts one of which is IPEC.  IPEC was established by a…

Confidentiality and Non-Disclosure Agreements taking Account of the Trade Secrets Directive

In Transposing the Trade Secrets Directive into English Law: Confidentiality Agreements5 Feb 2018 I advised that it would be prudent to ensure that non-confidentiality agreements and clauses complied with Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (the trade secrets directive) as well as the law of confidence. I gave more specific advice in Trade Secrecy Law changes Tomorrow - check your NDA, Standard Terms and other Agreements8 June 2018 NIPC Inventors Club and Checking your Confidentiality Clauses and Agreements for Compliance with the Trade Secrets Directive27 June 2018 NIPC News.

I have now received my first sets of instructions to draft and review confidentiality or non-disclosure agreements in the light of the trade secrets directive.  I have applied what I have learned through carrying out those instr…

British Accession to the Hague Agreement

Jane Lambert

On 13 March 2018 the British government deposited with the Director General of the World Intellectual Property Organization ("WIPO") an instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("the Hague Agreement").  The deposit of that instrument enabled the UK to join the Hague system for the registration of industrial designs from 13 June 2018.  The Hague system allows businesses to register up to 100 designs in 69 countries in a single application.

The Hague system is not entirely new to British business as the European Union has been party to the Hague Agreement since 1 Jan 2008.  The EU's participation in the Hague system works well for businesses that want to protect their designs throughout the whole EU as well as other parties to the Hague Agreement but Community design registration is an unnecessary expense for businesses that seek protection only in the UK and a…

Passing off - The Military Mutual Ltd v Police Mutual Assurance Society Ltd

Intellectual Property Enterprise Court (HH Judge Hacon) The Military Mutual Ltd v Police Mutual Assurance Society Ltd and others [2018] EWHC 1575 (IPEC) (22 June 2018)

The claimant arranges insurance and mortgages for past and present members of the armed forces.  On the "About Us" page of its website, it describers itself as "a Mutual set up to provide fair, financial services such as Home, Landlord, Military Kit and Business cover to those who are serving, veterans, families and supporters of our armed forces." Note the use of the big letter "M" in mutual,  That is a big part of the company's ethos.  It says that its "manifesto is very simple: always do the right thing for our Members."  The company has no shareholders or employees and is led in the main by retired senior officers who describe themselves as "customers and Members".  Anybody who acquires a policy or mortgage through the claimant company can become a member.   Its …